Legal Updates

General Court: no likelihood of confusion between marks consisting of same two letters in different order

The EU General Court has annulled a decision of the Board of Appeal of the EUIPO finding that there was a likelihood of confusion between the figurative mark EW and the earlier word mark WE.

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No BIG DEAL? Supreme Court confirms likelihood of confusion between marks as used

Israel’s Supreme Court has confirmed that there was a likelihood of confusion between the word mark BIG DEAL and the stylised mark BIG DEAL. When comparing the marks as used side-by-side, the likelihood of confusion was apparent.

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Barcelona Court of Appeal upholds criminal sentence for sale of counterfeit shoes

The Barcelona Court of Appeal has upheld a condemnatory judgment sentencing an online seller of counterfeit shoes for committing a crime under Article 274 of the Criminal Code.

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General Court: no mercy for late submission of proof of use

In Skyleader v EUIPO the General Court has confirmed that the documents containing the proof of use of the SKYLEADER mark had been received outside the time limit set by the EUIPO.

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Have you been 'adversely affected' by a trademark decision?

In CeramTec GmbH v EUIPO, the EU General Court has provided some guidance as to what it means to be ‘adversely affected’ by a decision of the EUIPO.

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Second Circuit: fraudulent lawsuit allegations insufficient to maintain RICO claim

In Kim v Kimm, the US Court of Appeals for the Second Circuit has affirmed the dismissal of a complaint alleging a scheme to fraudulently bring a trademark infringement lawsuit.

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General Court: well-known mark status cannot be established based on assumptions

The EU General Court has annulled a Board of Appeal decision declaring that the mark MASSI was invalid. It was not possible to ascertain the actual degree of knowledge of the earlier mark MASI without relying on assumptions.

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High Court: for purposes of passing off, one must compare "whole get-up" of products

In Crabtree Electrical v Lesco Manufacturing, South Africa’s High Court has found that there could be no passing off when one considered the "whole get-up" used by the parties when marketing their products.

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Rapper Dr Dre's opposition to DR. DRAI for health-related services dismissed

The US Trademark Trial and Appeal Board has dismissed rapper Dr. Dre's opposition to the registration of the word mark DR. DRAI and the figurative mark DOCTOR DRAI for goods and services in the field of women's and men's health.

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Mixed results for Nike, as social media proves to be a challenge to courts in injunctive proceedings

The Court of Appeal has reversed, in part, a High Court interim injunction which required Nike to delete certain social media posts as part of its "Nothing beats a Londoner/LDNR" campaign.

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EUIPO escapes liability in public procurement case as ECJ partially sets aside General Court judgment

The decision of the Court of Justice of the European Union in EUIPO v European Dynamics Luxembourg SA confirms that the EUIPO may incur non-contractual liability in public procurement cases.

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Appointed person calls last orders on BREXIT mark for beer

The appointed person has dismissed an appeal against the refusal of a UK application to register BREXIT for beer and related goods. The decision highlights the challenges in obtaining trademark protection for a well-known term.

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Supreme Court of Appeal: "one cannot monopolise the commons of the English language"

The Supreme Court of Appeal found no likelihood of confusion between PEPPAMATES and PEPPADEW, highlighting the consequences of adopting a descriptive mark through the use of a phonetic equivalent.

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Is 'cook' distinctive for the Spanish public? General Court gives its answer

The EU General Court has confirmed that there was a likelihood of confusion between the mark M’COOKY and the earlier Spanish mark MR. COOK. The key issue was whether the word 'cook' is distinctive.

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General Court rebukes Board of Appeal regarding proof of use; expands "link of complementarity"

The EU General Court has annulled a decision of the Fifth Board of Appeal of the EUIPO in opposition proceedings involving various ZOOM marks in Classes 9 and 15, finding that it had erred in its assessment of the similarity...

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Ferrero awarded Rs1 million in damages for infringement of Ferrero Rocher trade dress

The Delhi High Court has issued a permanent injunction preventing Ruchi International from selling lookalikes of Ferrero Spa’s Ferrero Rocher chocolates.

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Is HP Hewlett Packard's HP mark distinctive? The General Court decides

In two recent judgments, the EU General Court has considered the distinctive character of HP Hewlett Packard’s two-letter mark HP.

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Victory for Barilla: Supreme Court finds competitor's packaging confusingly similar

Israel’s Supreme Court has upheld a temporary injunction preventing Rami Levy from marketing pasta products in blue packaging, finding that it was confusingly similar to well-known pasta producer Barilla's own packaging.

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'max-polyakov.xyz' decision: UDRP is only concerned with protecting marks, not personal names

A WIPO panel has denied the transfer of a domain name consisting of a personal name on the grounds that such name was not used as a trademark at the time the domain name was registered.

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Mastercard wins appeal against device mark for likelihood of confusion

The Board of Appeal has found a likelihood of confusion between Mastercard’s well-known device marks and a device mark comprising two interlocking circles.

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UDRP complainants beware: careless attitude doesn't pay off

A WIPO panel has denied the transfer of a domain name confusingly similar to a complainant's trademark and found the complainant guilty of of reverse domain name hijacking.

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A tale of two cornets: General Court confirms lack of likelihood of confusion

The EU General Court has upheld a decision of the Fourth Board of Appeal of the EUIPO in opposition proceedings between two producers of ice cream cornet packaging.

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No trademark use? Shipment of Apple iPhone screens with obscured logos found not infringing

A Norwegian court has issued a surprising decision regarding what constitutes ‘trademark use’ in a case involving a shipment of Apple iPhone screens that had their trademarks temporarily covered.

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New Trademark Bill catches Nigerian stakeholders off guard

In a move that came as a surprise to most stakeholders, Nigeria’s National Assembly Senate Committee on Trade and Investment has held a public hearing for Bill SB 357, which would repeal the current Trademark Act.

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ECJ clarifies test to determine whether use of earlier sign is significant

A recent ECJ decision confirms that the test to determine whether use of an earlier sign is of more than local significance should not be strictly limited to the geographic area in which the relevant goods or services are offered.

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UDRP: owners of less well-known marks may have difficulty proving that registrant targeted their brand

A panel has refused transfer ‘virgan.com’ to the owner of several VIRGAN marks because the latter had failed to prove that the respondent had registered and used the domain name in bad faith.

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Release of '.fm' emoji domains: dotFM set to land windfall thanks to premium domain names

dotFM has released emoji domain names for registration, with the list of 'premium' emoji domain names being offered for equally premium prices.

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3D Kit Kat mark: advocate general delivers further blow to Nestlé

The advocate general has delivered another blow to Nestlé in its long-running attempt to register the shape of its four-fingered Kit Kat bar as a three-dimensional EU mark.

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PROTI fails to sway General Court the second time in opposition against PROTICURD

The EU General Court has issued its second decision in a long-lasting dispute involving the mark PROTICURD for goods in Classes 5 and 29, and earlier PROTI marks for goods in Classes 29 and 32.

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Can a mark be invalidated based on a lack of legal entitlement to own property?

In Savanagh Securities Limited v Cumann Lúthchleas Gael, the applicant claimed that the registration of the mark GAA offended Section 7 of the Irish Trademarks Act because its proprietor is an unincorporated association which cannot own property...

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Beijing IP Court's LIVINGSOCIAL decision: proving copyright ownership in trademark disputes

In opposition proceedings against the device mark LIVINGSOCIAL, the Beijing IP Court has held that, without compelling evidence that the mark was created independently, it infringed the prior copyright of LivingSocial.

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Issue 73
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